Appeal No. 1999-2193 Page 7
Application No. 08/975,338
enablement against evidence that the specification is not2
enabling.
Thus, the dispositive issue on appeal is whether the
appellants' disclosure, considering the level of ordinary skill
in the art as of the date of the appellants' application, would
have enabled a person of such skill to make and use the
appellants' invention without undue experimentation. The
threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by
advancing acceptable reasoning inconsistent with enablement.
In our opinion the examiner has not met his burden of
proof by advancing acceptable reasoning inconsistent with
enablement for the following reasons.
2The appellants may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure but may not add new matter. The appellants may
also submit factual affidavits under 37 CFR § 1.132 or cite
references to show what one skilled in the art would have
known at the time of filing the application.
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